Leigh v. Warner Brothers Inc.

• Citation: 212 F.3d 1210
• Decision Date: 25 May 2000
• Docket Number: No. 99-10087,99-10087
• Parties: (11th Cir. 2000) Jack LEIGH, Plaintiff-Appellant, v. WARNER BROTHERS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 1210

212 F.3d 1210 (11th Cir. 2000)

Jack LEIGH, Plaintiff-Appellant, v. WARNER BROTHERS, INC., Defendant-Appellee.

No. 99-10087.

United States Court of Appeals, Eleventh Circuit.

May 25, 2000.

[Copyrighted Material Omitted] Appeal from the United States District Court for the Southern District of Georgia.(No. 97-00340-CV-4), John F. Nangle, Judge.

Before DUBINA, Circuit Judge, KRAVITCH, Senior Circuit Judge, and NESBITT^*, Senior District Judge.

KRAVITCH, Senior Circuit Judge:

This appeal concerns the scope of a photographer's copyright and trademark rights in his work, the role of the court in determining whether images are "substantially similar" for purposes of copyright, and the power of the court to rule on dispositive motions without first allowing broad discovery. Jack Leigh took the now-famous photograph of the Bird Girl statue in Savannah's Bonaventure Cemetery that appears on the cover of the best-selling novel Midnight in the Garden of Good and Evil. Warner Brothers made a film version of the novel and used images of the Bird Girl both in promotional materials and in the movie itself. Leigh sued Warner Brothers, asserting that it infringed his copyright and trademark rights in the Bird Girl photograph. See 17 U.S.C. §§ 101-1101 (1999) (copyright); 15 U.S.C. §§ 1051-1127 (1999) (trademark).¹ The district court granted summary judgment for Warner Brothers on all claims, except one that the parties now have settled, and Leigh appeals.

The district court correctly ascertained the elements of Leigh's photograph protected by copyright and determined that the Warner Brothers film sequences are not substantially similar to those protected elements. Copyright infringement is generally a question of fact for the jury to decide, however, and the court erred in holding as a matter of law that no reasonable jury could find that the Warner Brothers promotional single-frame images were substantially similar to the aspects of Leigh's work protected by copyright.

As for Leigh's Lanham Act claims, the evidence that Leigh used the Bird Girl photograph to identify the source of his other work prior to the Warner Brothers movie is insufficient to establish the photograph as a trademark. We therefore affirm the district court's grant of summary judgment to Warner Brothers on Leigh's trademark claims.

Finally, Leigh contends that the district court abused its discretion by granting summary judgment without first allowing more discovery.² Additional discovery, however, would not help prove Leigh's use of his photograph as a trademark, and it could not overcome the substantial dissimilarity between Leigh's photograph and the film sequences. Additional discovery could well be appropriate on remand for Leigh's remaining copyright claim.

I. Background

In 1993, Random House commissioned Jack Leigh to take a photograph for the cover of Midnight in the Garden of Good and Evil ("Midnight "), a novel by John Berendt. After reading a manuscript of the novel, Leigh explored appropriate settings in Savannah and ultimately selected a photograph of a sculpture in the Bonaventure Cemetery known as the Bird Girl. Sylvia Shaw Judson had sculpted the Bird Girl in 1938, and she produced three copies of the statue. The Trosdal family had purchased one of the statues and placed it in their plot at Bonaventure Cemetery. The novel does not mention the Bird Girl statue. Leigh granted Random House permission to use the photo, but retained ownership and registered his claim of copyright.

In 1997, Warner Brothers produced a movie based on Midnight and decided to use the Bird Girl statue on promotional materials and at the beginning and end of the movie. Because the Trosdals had removed the statue from their cemetery plot after the book's publication, Warner Brothers made a replica of the Bird Girl with the permission of Sylvia Shaw Judson's heir. The company then took photographs and film footage of the replica in a new location in Bonaventure Cemetery. Those images are the subject of this lawsuit.

Three segments of film footage depict the Bird Girl statue. One is a promotional clip, and the others appear at the beginning and end of the Warner Brothers movie. Six still images feature the Bird Girl: a promotional photograph and nearly identical picture on the "goodandevil" web site, a movie poster, a newspaper advertisement the cover for the movie's soundtrack, and an internet icon. Leigh alleges that these images infringed his copyright and trademark rights in his Bird Girl photograph. The district court granted Warner Brothers' motion to stay all discovery, and later granted summary judgment for Warner Brothers on all claims except a copyright claim pertaining to the internet icon. The parties subsequently settled all claims pertaining to that internet icon.

We review the district court's grant of summary judgment de novo, construing all evidence in the light most favorable to the non-moving party. See Beal v. Paramount Pictures Corp., 20 F.3d 454, 458-59 (11th Cir.1994). Summary judgment is only proper when there are no genuine issues of material fact. See id. We review the court's decision to rule on the summary judgment motion without allowing the plaintiff to complete desired discovery for abuse of discretion. See Carmical v. Bell Helicopter Textron Inc., 117 F.3d 490, 493 (11th Cir.1997).

II. Leigh's Copyright Claims

To establish a claim of copyright infringement, a plaintiff must prove, first, that he owns a valid copyright in a work and, second, that the defendant copied original elements of that work. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991). The plaintiff can prove copying either directly or indirectly, by establishing that the defendant had access, and produced something "substantially similar," to the copyrighted work. See Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 (11th Cir.1982). Substantial similarity, in this sense, "exists where an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Id. (internal quotation omitted).

"Substantial similarity" also is important in a second, more focused way. No matter how the copying is proved, the plaintiff also must establish specifically that the allegedly infringing work is substantially similar to the plaintiff's work with regard to its protected elements. See Herzog v. Castle Rock Entertainment, 193 F.3d 1241, 1248, 1257 (11th Cir.1999) (per curiam, adopting the district court opinion in its entirety); Beal, 20 F.3d at 459 & n. 4; William F. Patry, Latman's The Copyright Law 193 & n. 18, 196-97 (6th Ed.1986). Even in the rare case of a plaintiff with direct evidence that a defendant attempted to appropriate his original expression, there is no infringement unless the defendant succeeded to a meaningful degree. See Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122-23 (2d Cir.1994).

For the purposes of its motion for summary judgment and this appeal, Warner Brothers does not contest Leigh's ownership of a valid copyright in the Bird Girl photograph. Leigh, on the other hand, takes issue both with the district court's view of the scope of his copyright and with the court's analysis of the similarities between the Bird Girl images.

Leigh's copyright does not cover the appearance of the statue itself or of Bonaventure Cemetery, for Leigh has no rights in the statue or its setting. See Franklin Mint Corp. v. National Wildlife Art Exch., Inc., 575 F.2d 62, 65 (3d Cir.1978) (artists have no copyright in the "reality of [their] subject matter"); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13:03[B][2][b] (1999) (noting that appearance of objects in the public domain or as they occur in nature is not protected by copyright). Nor does the copyright protect the association of the statue with the Midnight story. Leigh may have been the first to think of the statue as evocative of the novel's mood and as an appropriate symbol of the book's themes, but copyright law protects only original expression, not ideas. See 17 U.S.C. § 102(a)-(b); Feist, 499 U.S. at 345 111 S.Ct. at 1287 (citation omitted); Herzog, 193 F.3d at 1248 (citation omitted).

Thus, the district court correctly identified the elements of artistic craft protected by Leigh's copyright as the selection of lighting, shading, timing, angle, and film. See Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992). Leigh suggests that the court also should have considered the overall combination of these protected elements as well as the mood they convey. The court determined that the "eerie," "spiritual" mood was scenes a faire, expression commonly associated with the subject matter (cemeteries) and thus non-original and unprotectable. See Beal, 20 F.3d at 459-60 (describing the scenes a faire doctrine). Leigh contests the notion that cemeteries are typically portrayed in an eerie, spiritual manner, but there is no need to determine whether scenes a faire applies in this case.

Analyzing relatively amorphous characteristics of the picture as a whole (such as the "mood" or "combination of elements") creates a danger of unwittingly extending copyright protection to unoriginal aspects of the work. See 4 Nimmer & Nimmer, supra, § 13:03[A][1][c] (criticizing the use of "amorphous referent[s]" such as the "feel" of a work in copyright analysis because it threatens to erode the line between what is and is not protectable). This danger is especially acute in a case such as this, in which the unprotected elements of the plaintiff's work-the haunting pose and expression of the Bird Girl and the cemetery setting-are so significant.

Although some cases have evaluated the "mood" of a work independently, see, e.g., Beal, 20 F.3d at 461-62, in this case it is safest to focus on the more concrete elements of the photographer's craft. Even as Leigh...